Trademarks and Social Media: What startups should know!

Editor’s Note: This guest post has been created in collaboration and with financial support from the creators of the online trademark application tool Reggster.com. If you’re also interested in partnering with us, just reach out.

Social media plays an important role in any startup’s life. Over 2,5 billion people already have social media accounts and the figure is constantly rising.

While social media provides large platforms for companies to communicate, they also provide platforms for misuse of trademarks. It is a challenge for companies to make sure that their name is not being wrongly used in social media.

The good news for brand owners is that virtually all social media platforms provide relatively fast and inexpensive way to deal with misuses. They all have trademark policies that users must follow, and most platforms provide relatively effective and easy ways for reporting misuse.

A prerequisite of any action is that you have a trademark. Usually a registration is required. So, the question is, what can you do with your registered trademark in respect of social media.

Two basic principles that many startups get wrong

The first principle is that trademarks give you protection against commercial misuse. If you have protected your trademark, your exclusive rights to that trademark mean that other parties cannot use the same or similar trademark in the course of trade (i.e. in business). Non-commercial use falls outside trademark scope.

Secondly, trademarks are commercial symbols that function to distinguish a company’s products from other products. In order to be able to take action, the other use must cause a “likelihood of confusion”. This happens when a similar trademark is used for same or similar products or services. If your trademark is used by others for other goods or services on social media, or if it’s used non-commercially, there’s not much you can do.

Trademarks in usernames and account names, hashtags, etc.

Perhaps the most common misconception among brand owners with respect to social media is that simply because they have registered a trademark, they can claim a username or an account name from a previous owner. With respect to most social media platforms, a registered trademark on its own is not enough to claim the account or username. This is what Facebook has to say about the matter:

Usernames are generally claimed on a first-come, first-served basis. This means that you may see a Facebook Page or profile that includes your trademark in its username. While there may be cases where this type of use can be reported for trademark infringement based on the context of its use, please note that not every use of your trademark in a username is necessarily a trademark infringement.

YouTube’s policy, for example, is very similar. So the mere fact that you have a registered trademark is not enough. Social media platforms usually require that the username or account name is actually used in a commercial context that infringes your trademark rights. A username or account name on its own is not infringing.

Content and advertising

Trademark misuse happens also frequently with advertising. Most social media platforms rely on advertising to generate revenue. A typical scenario is that a company uses its competitor’s trademark as a keyword for advertising. Whether this is allowed or not, depends on the country. In most countries what matters is the contents of the ad.

Google, for example, does not restrict in most regions the use of other company’s registered trademarks as keywords (this applies to YouTube as well). What matters, is that the ad itself does not create likelihood of confusion. In practical terms, you shouldn’t include another company’s trademark in your ad text or in any other way create any impression that there is a link between you two. The mere “buying” of a keyword is not considered a trademark violation on its own.

Regarding other contents, referring to trademarks is not a trademark violation. For example, writing an article about a product is difficult without actually naming that product. Therefore, mere informational use does not constitute a trademark infringement. For instance, comparing your service to a competitor’s service is not a trademark violation.

You’re not constrained by social media platforms’ own trademark processes

It’s great that social media platforms provide quick and inexpensive way to damp out clear trademark violations. However, keep in mind that just because a social media platform does not provide a quick fix for your problem, or says that a particular conduct is acceptable, that doesn’t necessarily mean that there is no trademark violation. Social media platforms are not the final arbiters on trademark infringements.

For example, Instagram states on their website that:

Instagram can’t adjudicate disputes between third parties, and so we wouldn’t be in a position to act on trademark reports that require an in-depth trademark analysis or a real-world dispute outside of Instagram.

In case you encounter a problem for which there is no quick fix, you should consult a trademark attorney to see if there’s anything that can be done. Often there is.

Conclusions

So what should you do as a brand owner? Regarding usernames and account names, the best policy is to act fast. They are assigned on first-come, first-served basis, and the mere fact that somebody has registered an account with your trademark in it does not usually constitute a violation.

One thing that can be seen in practice is that securing a trademark registration gives tremendous confidence boost for companies and they might easily try to overreach in claiming trademark violations where none exist.

The basic rule that applies in and out of social media context is that a registered trademark gives you the right to prevent the use of another similar trademark commercially for similar products or services. This basic rule limits your possibilities to enforce your rights in social media and in real life. This does not mean, of course, that you shouldn’t protect your trademark, as you can also read here “10 reasons to register your trademark“. Also, when violations happen, you need to have your trademark to take action.

The best policy with respect to social media is to be faster than others. When you come up with a new name, reserve social media accounts as soon as you can. Also, you need to register your trademark. Most easily you can do it here.